The Judgement of the General Court of 29 June 2016, in the case Universal Protein Supplements Corp. versus EUIPO and H Young Holdings plc, interprets the applicant’s obligation laid down in Rule 37(b)(ii) of Commission Regulation (EC) No 2868/95.

Universal Protein Supplements Corp. filed an application of invalidity against the trademarks applied for by Young Holdings plc based on an unregistered trademark.

According to Article 8(4) of Regulation No 207/2009 the proprietor of a sign, other than a registered mark, may oppose the registration of an EU trade mark, if that sign satisfies four cumulative conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark.

The first two conditions arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. By contrast, the other two conditions constitute conditions laid down by the regulation which must be assessed in the light of the criteria set by the law governing the sign relied on. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trademark.

The Court of Justice stated that Rule 37 of Regulation No 2868/95 requires the applicant to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law.

In the present case, the applicant indicated the countries in which it claimed that it used its unregistered mark and made a general reference to the table annexed to the EUIPO guidelines. It is in these circumstances whether the Court has to decide if the applicant has satisfied the conditions under Rule 37(b)(ii) of Regulation No 2868/95.

The Court states that the information about the applicable right, provided by the applicant for a declaration of invalidity, must allow EUIPO to understand and apply the content of that right, the conditions for obtaining protection and the extent of that protection, and allow the other party to the proceedings to exercise its rights of defence. The table of national rights, as produced by the applicant, contains, for each of the Member States of the European Union, a list of the rights that could constitute earlier rights within the meaning of Article 8(4) of Regulation No 207/2009, with reference to the national legislation and a summary of the conditions, in particular as regards the acquisition and the rights conferred on the proprietor of the right. However, that table does not contain citations of the provisions of the national laws referred to in it. Even though the table contains all the information relating to one or several applicable national rights necessary to comply with the obligation arising under Rule 37(b)(ii) of Regulation No 2868/95 to provide the particulars of the right on which the application for a declaration of invalidity is based, it must however be observed that, in this case, the applicant did not identify, in a precise and unambiguous manner, the provisions of the various national laws on which it based its applications for declarations of invalidity, the table annexed to the EUIPO guidelines did not allow EUIPO to identify the provisions of national law on which the applicant’s application for declaration of invalidity was based or to apply the content of those rights, or the intervener to exercise his rights of defence. Consequently, the Court dismissed the action.